How can an applicant respond to a rejection based on lack of utility?
When faced with a rejection based on lack of utility, an applicant has several options to respond. According to the MPEP:
An applicant can do this using any combination of the following: amendments to the claims, arguments or reasoning, or new evidence submitted in an affidavit or declaration under 37 CFR 1.132, or in a printed publication.
The key points for an effective response are:
- Provide relevant new evidence that addresses the issues raised in the rejection
- Ensure any declarations establish a clear nexus between conclusions and supporting evidence
- Avoid declarations that merely express opinions without substantive support
It’s important to note that the burden shifts to the applicant to rebut the prima facie showing once it has been properly established. The applicant’s response should aim to demonstrate that the totality of the record shows that the asserted utility is specific, substantial, and credible.
The USPTO will then review the entire record, including the original disclosure, any new evidence or arguments provided by the applicant, and any claim amendments. The rejection should only be maintained if the totality of the record continues to show that the asserted utility is not specific, substantial, and credible.
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